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Since inter partes review became available, the PTAB has granted only two motions to amend patent claims—once in Int’l Flavors & Fragrances Inc. v. U.S. Dept. of Agriculture, May 20, 2014, in which the motion was unopposed by the challenger, and recently in Riverbed Technology Inc. v. Silver Peak Systems Inc., Dec. 30, 2014, where the PTAB allowed four new claims but rejected six others.

The dismal success rates of motions to amend in IPR can be attributed to the stringent standards the PTAB requires patent owners to meet when looking to substitute new claims.

For instance, in a recent order, Corning Optical Communications RF, LLC v. PPC Broadband, Inc., October 30, 2014, the board provided specific guidance on the requirements of a motion to amend and propose substitute claims. A proposed substitute claim must be directly linked to the original patent claim it is intended to replace, and not merely a substitute for any claim the Patent Office cancels.  The substitute claim should contain all the features and elements of the original claim it is intended to replace. The motion to amend must clearly show the changes between the original claim and the proposed substitute claim, preferably with brackets and underlining to show deleted and inserted text. If the motion to amend is granted, the proposed substitute claims will be added to the involved patent without examination, so the motion must show patentability over the prior art. The patent owner must also show written description support in the specification for each proposed substitute claim.  If the proposed substitute claim includes a new term that could be disputed, the patent owner should provide a proposed claim construction in the motion to amend, and it is not sufficient to say a term should be construed according to its plain and ordinary meaning.

The standard may soon change, however, as the PTAB has sought and received public comment about how it can improve amendment practice. Through a June 27, 2014, Federal Register Notice and a July 14, 2014, post on the Director’s Forum blog, the PTAB asked “what modifications, if any, should be made to the Board’s practice regarding motions to amend?”  Many of the responding comments criticized the high bar the board has set for amending claims and the burdensome procedural restrictions it places on patent owners seeking to do so.

If you have questions or need more information, please contact Meredith Elkins or Justin Allen.

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